Appeal No. 1997-2063
Application No. 08/433,818
(page 4 of Declaration). To the extent that the examiner's
criticism is based upon a concern that the breadth of the claims
embraces inoperable, i.e., non-superconductive materials, it must
be borne in mind that it is not the function of the claims to
specifically exclude possible inoperable substances. In re Dinh-
Nguyen, 492 F.2d 856, 858-59, 181 USPQ 46, 48 (CCPA 1974); In re
Anderson, 471 F.2d 1237, 1242, 176 USPQ 331, 334-35 (CCPA 1973).
See also In re Kamal, 398 F.2d 867, 872, 158 USPQ 320, 324 (CCPA
1968). Indeed, since the claims require a "superconductor"
deposited on a particular substrate, it stands to reason that a
non-superconductive material would not be within the scope of the
appealed claims.
Concerning the examiner's rejection of claims 16, 25 and 30
under § 112, first paragraph, as being based upon a specification
that does not provide descriptive support for the layered
perovskite oxide compound comprised of the recited metallic
elements, we cannot agree with the examiner that "[i]t is unclear
where the superconductor language of claims 16, 25 and 30 is in
the original specification" (page 5 of Answer). In assessing the
adequacy of the descriptive nature of a specification, it must be
determined whether the original specification reasonably conveys
to one of ordinary skill in the art that the inventors had in
their possession, as of the filing date of the application, the
subject matter encompassed by the claim language at issue.
-5-
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007